Velcro, singing lawyers, genericide, and what you need to know about trademarks in writing

Let’s talk about trademarks in writing, genericide, and and why this video about Velcro exists:

When a company’s product and marketing take off, it dominates its category. As a natural result, its name becomes synonymous with the category — a process called genericide. When the public can’t tell the difference, the trademark becomes generic, and the company can no longer protect itself against knockoffs. As a result, there’s a whole class of trademark lawyers whose job is to stop people from using a company’s trademarks in a generic way.

To block the genericide, companies send cease-and-desist letters, sue knockoffs using the trademark, and remind the public that the trademark is not a generic term. The patent on Velcro ended 40 years ago; there are plenty of competing products. But they’re not the trademarked product Velcro, which is the point of this video.

This video will not work. It will make no difference at all in the use of “Velcro” as a generic term. But that’s not the point. The point is that Velcro Industries N.V. can prove it is making the effort, which will provide supporting evidence that it’s protecting the trademark in any lawsuits against Velcro knockoffs appropriating its trademark.

This is benign (and worth a chuckle). But I’ve had many encounters with trademark lawyers in my years as a writer. Unless they work for you, they’ll tell you all sorts of rules that you don’t actually have to follow. If you’re going to write with the names of trademarked products and services, you need to know the actual rules.

Common misconceptions and actual rules about trademarks in writing

Here’s what I’ve learned in 35 years writing about trademarked products.

• Anyone can put “TM” next to a name. The circled R ® indicates a trademark registered with the trademark office, and if you misuse it, you’re subject to prosecution for fraud. The ™ is supposed to signify that the company has applied for a trademark (or SM for a trademark application for a service). But in practice, many companies put ™ next to names they intend to trademark, even if they’ve taken no action. If they later decide to defend the mark, they’ll apply for the trademark then.
• You don’t need to use trademark symbols in journalistic writing. I’ve had companies insist on trademark markings in books and articles; in once case, FedEx insisted we mark its trademark in a case study that had no factual errors and had been approved by all the people whose actions we were describing. This is absurd; imagine how a book or newspaper piece would look with ® and ™ scattered throughout the text. So long as you capitalize trademarked terms and use them to describe an actual product and not a generic category, you’re legally in the clear. Even in you’re writing a press release or marketing copy, there’s no legal action that the trademark own can take against you for failing to mark their trademarks, so long as you use them properly.
• For readability, you need not slavishly follow idiosyncratic trademark renderings. LEGO and DIRECTV insist that their product names are in all caps. Writing them that way throughout a text would be ungainly. In general, I render all-caps trademarks as if they were normal product names (Lego and Directv). I also leave off punctuation in trade names that interferes with readability (or else you get stuff like “The Yahoo! announcement was overblown.”) And I capitalize all-lowercase trademarks for the same reason: Salesforce. However, for names with caps internally, it’s more readable to render them as the trademark owner prefers: FedEx, iPhone, eBay.
• Trademarks only apply in a narrow category. This is how there can be a Thomson’s sealant product for decks and a Thomson Financial Services, both trademarked — no one is going to confuse one for the other. As companies grow, though, this can create conflict: Apple (the computer company) needed to settle a trademark dispute with Apple Records (the Beatles’ record label) when the former went into music services with iTunes and iPods. To find out the categories in which a trademark applies, search on Trademarkia.
• You generally can’t register a trademark on a book title. There are lots of books with the same title — I count six books on Amazon called “Relationship Marketing,” for example. But if you’ve built a business around the title or a series of books, you can trademark a phrase around that (like “For Dummies”).
• When writing about your own products, you only need one trademark symbol per trademark. There’s no need to pepper ® and ™ all over the page in a press release. Mark it on the first use, and put a note at the bottom (e.g. “iPhone is a registered trademark of Apple Inc.”). Including the symbols at all is optional, but in a dispute, it will help you maintain the position that you gave others notice of a trademark.
• Trademark rules can make your writing stilted; don’t bother. Trademark lawyers will tell you that you must always use trademarks as an adjective (“Kleenex tissues”), not as a noun (“pass me that Band-Aid”) or a verb (“let me Google that for you.”) They’ll also tell you you shouldn’t pluralize them — the Blackberry company had a fit when I wrote about “Blackberries” in one of my books. In practice, there is nothing a company can do to force you to follow these rules unless you are using the product name in a misleading way. If you’re writing about your own product, your will have to fight this battle with your trademark lawyers, who may insist on these formulations to protect the trademark from genericide as is happening to Kleenex and Google right now. Shockingly, Google (the verb) is already an acceptable Scrabble word.
• In theory, you can now trademark offensive terms. Previously, the U.S. Patent and Trademark office rejected offensive trademarks (that’s why it invalidated the trademark for the Washington Redskins, for example). But in June, the Supreme Court set a precedent that offensive trademarks were defensible — the test case was for an Asian rock band called “The Slants.” My own trademark registration for “Without Bullshit” has been in limbo, but I’m hopeful that this case will allow me to register the trademark.

The story about generic trademarks

There’s a host of words that used to be trademarks, and lots of others that may lose their protection in the future if they become sufficiently generic. Can you tell which are which in this little story?

He popped an aspirin and looked up from his TV dinner at the dame, as if through cellophane. She was a recovering heroin addict who’d come up the escalator from another zip code after a few turns on the trampoline with a yo-yo. The kerosene had done a number on her thermos full of dry ice after a long day sitting on the linoleum in the laundromat. She slid her zipper down a notch. Whatever her problem was, the cure wasn’t in the app store, that was certain.

His adrenaline spiked but his brain felt like it was wrapped in bubble wrap. Time to tear off the band-aid, wipe off the chap stick with a kleenex, and throw the teflon tupperware and the crock pot in the fiberglass dumpster. On the formica countertop behind him in a plexiglass box were a frisbee, a hackey-sack, a ping-pong paddle, and a hula-hoop from the last client, an astroturf salesman who’d just spent a few hours too long in the jacuzzi. He unwrapped the saran wrap from the popsicle in his freezer and scotch taped, superglued, and velcroed it to his forehead to dull the pain of the endless loop of muzak, hiding the ungainly mess under his stetson. A super hero would have tasered her the moment she walked in but he was just a faint xerox copy of one, one step ahead of the realtor who was about to foreclose. He sure wasn’t going to google his way out of this mess.

“The name’s Mark,” he mumbled. “Mark Trade.” She ® a generic smile. This was going to be interesting.

Answers here.